Brands are increasingly utilizing recurring characters in commercial advertisements. Some examples include Progressive Insurance’s “Flo” (Stephanie Courtney), Nationwide’s “World’s Greatest Spokesperson in the World” (Bob Wiltfong) and GEICO’s Gecko (voiced by Jake Wood). Brands often make substantial investments in these recurring characters and use them across a wide variety of advertising platforms for many years because of the potentially valuable association in a consumer’s mind between the brand and the character. But what happens when the actor playing the character shows up in a competitor’s commercial?
In September, Sony Computer Entertainment America LLC (“Sony”) filed a lawsuit after its former spokesperson, Jerry Lambert, appeared in a commercial for Bridgestone Americas, Inc. (“Bridgestone”). According to a complaint filed in the U.S. District Court for the Northern District of California, Sony claims Lambert portrayed the character “Kevin Butler” for several years in various promotional spots and materials advertising Sony’s PlayStation video game systems. Lambert allegedly appeared in “over thirty commercial spots and other promotional material for [Sony] and made an appearance as ‘Kevin Butler’ at the 2010 Electronic Entertainment Expo’ in order “to promote the PlayStation brand.” In Sony’s view, the character Kevin Butler “is a well-known and popular figure among video game consumers and has achieved widespread recognition as distinguishing [Sony’s] goods and services from others.” Moreover, Sony claims Lambert and his advertising company, Wildcat Creek, Inc., had “agreed not to promote any competing video game products.”
The dispute arose when Bridgestone aired a commercial advertising its “Game On!” tire promotion featuring Nintendo — a long time rival and competitor of Sony. Sony alleges the commercial “depicts a Bridgestone employee who consumers reasonably perceive to be ‘Kevin Butler’ promoting the Nintendo Wii [game system], a product that competes directly with [Sony’s] PlayStation products.” Sony claims consumer confusion will be greater under the circumstances because in the commercial Lambert “appeared to be ‘testing’ Nintendo’s Mario Kart® game at a time when [Sony] is actively promoting the launch of its own carting video game,
LittleBigPlanet® Karting, in conjunction with the cartoon version of the ‘Kevin Butler’ character.” Sony raises causes of action for trademark infringement, state and common law unfair competition, misappropriation and tortious interference.
In light of the increasing use and enormous potential value of recurring characters in commercial advertisements this case will be important to monitor. Bridgestone filed an answer on October 4, 2012, denying the allegations. The case is Sony Computer Entertainment America LLC v. Bridgestone Americas, Inc. et al, 12-Civ-4753 (N.D. Cal.). (In an upcoming blog we’ll analyze the strengths and weaknesses of the respective positions of the parties).
